DECISION

Dale Earnhardt, Inc. v. Marroc Corporation

Claim Number: FA0306000161271

PARTIES

Complainant is Dale Earnhardt, Inc., (“Complainant”) represented by Henry B. Ward of Alston & Bird, LLP. Respondent is Marroc Corporation, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 30, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On June 2, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@daleearnhardtfoundation.com, postmaster@daleearnhardtfoundation.org and postmaster@daleearnhardtfoundation.net by e-mail.

A timely Response was received on June 17, 2003. Respondent stated, “In the interest of fairness and respect for the legacy of Dale Earnhardt, Marroc Corporation respectfully releases the above listed domain names so that they may be transferred to Dale Earnhardt, Incorporated, effective immediately.”

On June 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.      Complainant makes the following assertions:

1. Respondent’s <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names are confusingly similar to Complainant’s DALE EARNHARDT mark.

2. Respondent does not have any rights or legitimate interests in the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names.

3. Respondent registered and used the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names in bad faith.

B.      Respondent submitted an incomplete Response that, nevertheless, indicated Respondent was willing to transfer the disputed domain names to Complainant. In summary, Respondent does not dispute Complainant’s claim to the domain names.

FINDINGS

Complainant holds two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DALE EARNHARDT mark (Reg. No. 1,644,237 registered on May 14, 1991 and Reg. No. 2,035,107 registered on February 4, 1997) related to entertainment services and numerous goods. Complainant operates websites at <daleearnhardt.com>, <daleearnhardtinc.com> and <daleearnhardtincorporated.com>, which offer goods and services related to the DALE EARNHARDT mark. One of Complainant’s licensees is The Dale Earnhardt Foundation, a non-profit corporation established for charitable purposes.

Respondent registered the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names on February 27, 2001. Respondent is using the domain names to redirect Internet traffic to Respondent’s <zapblaster.homestead.com> website, which markets and promotes Respondent’s ZAP-BLASTER mass e-mail services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the DALE EARNHARDT mark through registration with the USPTO and continuous use in commerce since at least as early as January 1995.

Respondent’s <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names are confusingly similar to Complainant’s mark because the domain names incorporate Complainant’s entire mark and simply add the generic term “foundation” to the end of the mark. The addition of a generic term to a famous mark does not sufficiently differentiate the domain names from the mark with regard to Policy ¶ 4(a)(i) because Complainant’s registered trademark remains the principal aspect of the mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent specifically expresses its intent to transfer the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names to Complainant in the Response. Respondent’s willingness to transfer the disputed domain names to Complainant demonstrates that Respondent lacks any rights to or legitimate interests in the domain names pursuant to Policy ¶ 4(a)(ii). See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding that the Respondent’s willingness at the onset of the Complaint to transfer the domain names shows it lacks any legitimate interest or rights in the names).

The Panel finds that Respondent’s offer to transfer the domain names in addition to Complainant’s submissions of evidence establish Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s offer to transfer the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names to Complainant also suggests that Respondent registered and used the domain names in bad faith under Policy ¶ 4(a)(iii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

Moreover, Respondent is using the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names to divert Internet traffic to Respondent’s website, which markets and promotes Respondent’s ZAP-BLASTER mass e-mail services. Respondent’s registration and use of the domain names to divert Internet traffic to Respondent’s commercial website demonstrates Respondent’s registration and use of the domain names in bad faith because intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org> and <daleearnhardtfoundation.net> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 8, 2003

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